Judge Orders Transfer of Weightlifting Domains to USA Weightlifting

MANHATTAN (LN) — U.S. District Judge Paul A. Engelmayer of the Southern District of New York issued the order on Wednesday, following his March 17 ruling that established liability on USA Weightlifting’s counterclaims for trademark infringement, false designation of origin, and violations of the Anticybersquatting Consumer Protection Act.

The court held that USA Weightlifting was entitled to a rebuttable presumption of irreparable harm due to the likelihood of confusion created by De Hoop Cartier’s use of the USA WEIGHTLIFTING MARKS. De Hoop Cartier failed to rebut that presumption.

The judge noted that monetary damages were inadequate because De Hoop Cartier had ignored two demand letters and continued its infringement and cybersquatting activities throughout the litigation.

“Plaintiff’s bad faith infringement and cybersquatting and continued infringement exploits that hard earned goodwill,” the court wrote.

The order permanently enjoins De Hoop Cartier and its affiliates from using the USA WEIGHTLIFTING MARKS or any confusingly similar marks to identify goods or services. It also bars De Hoop Cartier from using the words “USA Masters Weightlifting” or “USA Weightlifting” in any combination as a corporate name, website URL, or social media title.

Under the terms of the injunction, De Hoop Cartier must transfer ownership and control of the domain names www.mastersweightlifting.org and www.usamastersweightlifting.com to USA Weightlifting. De Hoop Cartier must also destroy all unauthorized materials bearing the marks.

De Hoop Cartier must file a sworn report within 30 days detailing its compliance with the order.

The court retained jurisdiction to enforce the injunction and punish any violations. Damages will be determined separately pursuant to the court’s March 17 opinion and a March 27 minute entry.